Ex parte Bosshart

Board of Patent Appeals and Interferences

Jul 30, 1999

08134147 (B.P.A.I. Jul. 30, 1999)

Application for patent filed October 8, 1993.1
1
Paper No. 17
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte PATRICK W. BOSSHART
______________
Appeal No. 96-3054
Application 08/134,1471
_______________
ON BRIEF
_______________
Before JERRY SMITH, BARRETT, and HECKER, Administrative Patent
Judges.
HECKER, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the final
rejection of claims 1 through 7 and 14 through 25. Claims 8
through 13 have been canceled, and claims 26 through 28 have
been withdrawn from consideration as being directed to a non-
Appeal No. 96-3054
Application 08/134,147
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elected invention.
The invention relates to a phase-locked loop circuit
(PLL) for locking the phase of an oscillator output signal to
the phase of a reference signal by detecting a phase
difference through multiple clock cycles. In particular,
looking at Figure 8, the phase-locked loop includes a multi-
cycle phase detector 11, a charge pump 12, a loop filter 13
and a voltage controlled oscillator (VCO). The multi-cycle
phase detector 11 detects a phase difference between a
reference clock signal (input clock) from an off-chip source,
and the generated clock signal from the VCO on line 30. The
charge pump 12 connects to the phase detector 11 and provides
output current pulses to increase or decrease the output
voltage at the loop filter 13. The output voltage from filter
13 in turn adjusts the phase of the VCO.
Representative independent claim 15 is reproduced as
follows:
15. A phase-locked loop circuit for locking the
phase of an oscillator output signal to the phase of a
reference signal, comprising:
Appeal No. 96-3054
Application 08/134,147
Although Liu et al. (5,278,874) is listed in the answer, it is not used in any outstanding2
rejection.
3
a phase detector for detecting a phase difference
between an input signal and said reference signal through
multiple clock cycles, and for providing a first phase
detector output signal representative of a detected phase
difference less than a single cycle, and for providing a
second phase detector output signal representative of a
detected phase difference greater than a single cycle;
control means, receiving said first phase detector
output signal and said second phase detector output signal,
for providing a voltage controlled oscillator (VCO) control
signal controlled by said first phase detector output signal
and said second phase detector output signal;
a voltage controlled oscillator receiving said VCO
control signal and providing said oscillator output signal
which is applied to said phase detector as the input signal
thereof.
The references relied on by the Examiner are as
follows :2
Koskowich 5,168,245 Dec. 1,
1992
Wong et al. (Wong) 5,239,561 Aug. 24, 1993
Ogawa et al. (Ogawa) 5,285,483 Feb. 8, 1994
(filed Jun. 8, 1992)

Claims 1 through 7, 14 and 19 through 25 stand
rejected under 35 U.S.C. § 112, first paragraph, as being
directed to an invention which is not supported by the
Appeal No. 96-3054
Application 08/134,147
The final rejection (page 4) states “if the new matter were withdrawn from the amended3
claims 1-7 and 14 and specification, old rejections made in the first Office Action dated 06/20/94
would still be sustained.” However, that rejection has not been made and is not before us. Likewise, at
page 9 of the final rejection, it states “if new matter were withdrawn from the amended claims 19-25,
claim 19, ...., is also rejected under 35 U.S.C. § 103 based on the same grounds for the rejection of
claim 15.” However, that rejection has not been made and is not before us.
4
specification as originally filed. 3
Claims 15 and 16 stand rejected under 35 U.S.C. §
103 as being unpatentable over Wong in view of Koskowich.
Claims 17 and 18 stand rejected under 35 U.S.C. §
103 as being unpatentable over Wong in view of Koskowich and
further in view of Ogawa.
Rather than repeat the arguments of Appellant or the
Examiner, we make reference to the brief and the answer for
the details thereof.
OPINION
After a careful review of the evidence before us, we
agree with the Examiner that claims 1 through 7 and 14 are
properly rejected under 35 U.S.C. § 112, first paragraph.
Thus, we will sustain the rejection of these claims but we
Appeal No. 96-3054
Application 08/134,147
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will reverse the rejection of claims 15 through 18 under 35
U.S.C. § 103, and the rejection of claims 19 through 25 under
35 U.S.C. § 112, first paragraph.
We consider first the rejections under the first
paragraph of 35 U.S.C. § 112. Appellant has characterized
these rejections as “being based on a non-enabling disclosure”
(Brief, pages 3 and 4, items 3 and 9). The Examiner correctly
notes that this is not correct (Answer, pages 2 and 3), and
that the rejection is based upon lack of support in the
specification. It should always be kept in mind that the
written description requirement is a separate and distinct
requirement under
35 U.S.C. § 112, first paragraph. It is clearly separate from
the enablement requirement. Vas-Cath, Inc. v. Mahurkar, 935
F.2d 1555, 1563, 19 USPQ2d 1111, 1117 (Fed. Cir. 1991).
The rejection of claims 1 through 7 and 14 states:
Specifically, the limitation where “the multi-cycle
phase detector provides a phase detector output
signal representative of the detected phase
difference updated at least every cycle of the
reference signal” was not disclosed in the
application, as originally filed. (Answer at page
3.)
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Application 08/134,147
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This rejection relates to the written description
requirement of 35 U.S.C. § 112. The purpose of the written
description requirement is to ensure that the applicant
conveys with reasonable clarity to those skilled in the art
that he was in possession of the invention as of the filing
date of the application. For the purposes of the written
description requirement, the invention is "whatever is now
claimed." Vas-Cath, Inc. v. Mahurkar, 935 F.2d at 1564, 19
USPQ2d at 1117 (Fed. Cir. 1991).
Appellant argues that the specification supports
the claim recitation in that it is an “inherent property of
the embodiment completely disclosed in the application as
originally filed.”, and explains how the invention operates.
(Brief, pages 5-7.) The Examiner states “The [A]ppellant has
cited several instances contending that they disclos[]e the
above feature. However, none of them is seen to support the
[A]ppellant’s arguments.” (Answer, bottom of page 9.) An
invention claimed need not be described in ipsis verbis in
order to satisfy the written description requirement of 35
U.S.C. § 112, first paragraph. In re Lukach, 442 F.2d 967,
Appeal No. 96-3054
Application 08/134,147
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969, 169 USPQ 795, 796 (CCPA 1971). However, we have also
reviewed Appellant’s explanation of inherency, and find no
clear support for the recited claim limitation.
The noted claim language does not appear in the
specification. Since Appellant has not demonstrated with
reasonable clarity to those skilled in the art that he was in
possession of the invention as of the filing date of the
application, we will sustain the rejection of claims 1 through
7 and 14 under 35 U.S.C. § 112, first paragraph.
With regard to the rejection of claims 19 through 25
under 35 U.S.C. § 112, first paragraph, the Examiner holds
that the claim limitation “said phase detector provides said
first phase detector signal as duty cycle modulated pulses” is
not supported by the specification as originally filed.
Appellant contends that this limitation is disclosed in the
specification as originally filed, and explains the circuit
operation (brief-page 15). Reviewing these arguments, we
agree with the Examiner that these arguments do not
demonstrate with reasonable clarity to those skilled in the
art that Appellant was in possession of the invention as of
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Application 08/134,147
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the filing date of the application. However, at page 7, lines
23-26 of the specification (as originally filed), it states:
The phase detector 11 sends phase
adjustment signals to the charge pump 12
which are single and two-cycle, up/down,
pulse-width modulated, digital control
signals up-B, down, UP2-B, DOWN2.
(Emphasis added.)
We find pulse-width modulated, fully supports the
claim language “duty cycle modulated pulses”, and thereby will
not sustain the rejection of claims 19 through 25 under 35
U.S.C.
§ 112, first paragraph.
Before we discuss the prior art rejections, we note
that Appellant has argued several rejections which are not
outstanding, i.e., a 35 U.S.C. § 112, second paragraph
rejection of claims 15 through 24 which has been withdrawn,
rejections using the reference Liu et al. against claims 15
through 18, and an art rejection of claims 19 through 25 using
Wong and Koskowich. (Brief, pages 8-13 and 15.) We will not
comment on the merits of rejections which are not before us.
Turning to the rejection of claims 15 and 16 under
35 U.S.C. § 103, the Examiner has failed to set forth a prima
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Application 08/134,147
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facie case. It is the burden of the Examiner to establish why
one having ordinary skill in the art would have been led to
the claimed invention by the reasonable teachings or
suggestions found in the prior art, or by a reasonable
inference to the artisan contained in such teachings or
suggestions. In re Sernaker, 702 F.2d 989, 995, 217 USPQ 1, 6
(Fed. Cir. 1983).
The Examiner cites Wong as teaching the claimed
invention except for:
(a) the feature where a first control signal
source provides a first control signal responsive to
the first phase detector output signal when the
phase difference is less than a single cycle, and
where a second control signal source provides a
second control signal responsive to the second phase
detector output signal when the phase difference is
greater than a single cycle (Answer, page 5.)
The Examiner then incorporates the control means (SPED, Figure
2) of Koskowich to provide a first control signal source (150,
152
of Koskowich) and the second signal source (160, 162 of
Koskowich) in the multi-cycle phase detector taught by Wong
(Answer, page 6).
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Application 08/134,147
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Appellant argues that:
[T]he two detectors of Koskowich’s circuit
are not the same as those set forth in Claims 15 and
16. Thus, Claim 15 recites --a phase detector for
detecting a phase difference between an input signal
and said reference signal through multiple clock
cycles, and for providing a first phase detector
output signal representative of a detected phase
difference less than a single cycle, and for
providing a second phase detector output signal
representative of a detected phase difference
greater than a single cycle--(emphasis added). By
contrast, Koskowich teaches providing a single phase
detector, combined with a frequency detector.
Koskowich thus teaches away from the invention as
set forth in Claim 15, as he teaches using a
frequency detector to address the problem of cycle
slipping. Wong et al. is even less relevant than
Koskowich. There is no teaching nor suggestion in
either Koskowich or Wong et al. of detecting phase
differences greater than a single cycle, and
providing a signal representative thereof so as to
achieve the improved functionality provided by the
invention set forth in claim 15. (Brief, pages 13
and 14, underlining added.)
The Examiner responds that:
Koskowich’s phase detector is equivalent to the
recited first phase detector, which is used to
detect a phase difference less than a single cycle.
Moreover, Koskowich’s frequency detector is actually
a phase detector which detects a phase difference
greater than a cycle, which is equivalent to the
recited second phase detector. (Answer, pages 14
and 15.)
We agree with the Examiner that Koskowich’s phase
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Application 08/134,147
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detector is equivalent to Appellant’s first phase detector.
However, we do not agree that Koskowich’s frequency detector
is actually a phase detector which detects a phase difference
greater than a cycle. Koskowich states, “The Sequential Error
Detector (SPED) [hence the frequency detector] is active only
while cycle slipping is occurring.” (column 5, lines 37 and
38). Cycle slipping occurs when the phase error reaches 180
degrees (note Koskowich, column 5, lines 34-36, “thereby
indicating the absence of cycle slips, i.e., the phase error
never reaches 180 degrees.”) Thus, Koskowich’s frequency
detector provides a second signal at less than a single cycle
(at 180 degrees), a single cycle being 360 degrees (note
Appellant’s specification at page 23). This is contrary to
that claimed by Appellant, i.e., “providing a second phase
detector output signal representative of a detected phase
difference greater than a single cycle;” (claim 15, lines 7
and 8, emphasis added). Thus, we need to go no further, and
will reverse the Examiner’s rejection of claims 15 and 16
since the necessary elements are not found in Wong or
Koskowich.
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Application 08/134,147
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With regard to the rejection of claims 17 and 18
(dependent from claim 15) under 35 U.S.C. § 103 as being
unpatentable over Wong in view of Koskowich and further in
view of Ogawa, we find nothing in Ogawa to supply the elements
missing from Wong and Koskowich as discussed supra. We,
therefore, will not sustain the rejection of claims 17 and 18.
In view of the foregoing, the decision of the
Examiner rejecting claims 1 through 7 and 14 under 35 U.S.C. §
112, first paragraph, is affirmed; however, the decision of
the Examiner rejecting claims 19 through 25 under 35 U.S.C. §
112, first
paragraph, and claims 15 through 18 under 35 U.S.C. § 103 is
reversed.
Appeal No. 96-3054
Application 08/134,147
We note that in the specification at page 10, lines 24 and 25, the co-filed application should4
be identified.
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a). 4
AFFIRMED-IN-PART
JERRY SMITH )
Administrative Patent Judge )
)
)
)
LEE E. BARRETT ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
STUART N. HECKER )
Administrative Patent Judge )
Appeal No. 96-3054
Application 08/134,147
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SNH/cam
Appeal No. 96-3054
Application 08/134,147
15
J. Dennis Moore
Texas Instruments Incorporated
P O. Box 655474, M/S 219
Dallas, TX 75265